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Copyright Protection of Logo

Copyright Protection of Logo

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COPYRIGHT PROTECTION OF LOGO

PROJECT ON COPYRIGHT PROTECTION OF LOGO FOR Intellectual Property Law – I (Copyright Law) OFFERED BY Anirban Mazumdar SUBMITTED BY RAWISEN GURIA I.D. 207062 IVth Yr. VIIth Semester
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COPYRIGHT PROTECTION OF LOGO

INTRODUCTION Copyright subsists in certain kind of works. This works means literary, dramatic, musical or artistic work.1 The subject matter of copyright protection includes every production in the literary, scientific and artistic domain, whatever the mode or form of expression.2 Copyright law is that branch of intellectual property law which deals with the rights of the creators of these works.3 Logo is protected under copyright law as an artistic work.4 The issue of protection of logo gives ample scope to compare and contrast between the copy right law and trademark law. Essentially the infringements of logo lead to cause of action in the trademark law.

The civil law copyright tradition is based on natural law theory the author acquires a property right in the work by virtue of the mere act of creation. The law merely recognizes formality of the attainment of rights for the activity of creating a work. For a work to enjoy copyright protection it must be an original intellectual creation of the author. The requirement of originality can be understood as a reference to the uniqueness of artistic works.

LOGO AS TRADEMARK Logo it is also considered a trademark.5 Trademark law provides protection, to the owner of a trademark, by ensuring the exclusive right to use it to identify goods or services. It is essentially a means to obtain recognition and financial profit. Conferring this right to trademark owners and preventing competitors from using protected distinctive signs, trademark law ensures that
Section 2 clause y sub-clauses i of the Indian Copyright Act, 1957 Article 2(1) of the Berne Convention contains a reference to “maps, plans, sketches and three-dimensional works relative to geography, topography, architecture or science.” 3 The Berne Convention for the Protection of Literary and Artistic Works in Article 2(1) says that literary and artistic works include “every production in the literary, scientific and artistic domain, whatever may be the mode and form of its expression.” 4 Section 2 (c) of the Indian Copyright Act, 1957says “artistic work” means(i) a painting, a sculpture, a drawing (including a diagram, map, chart or plan), an engraving or a photograph, whether or not any such work possesses artistic quality; (ii) work of architecture; and (iii) any other work of artistic craftsmanship; 5 Article 15(1) of the Agreement on Trade-Related Aspects of Intellectual Property Rights says “any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings.”
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trademarks can be applied to identify the commercial source of a product or service. Trademark protection prevents use of identical or similar trademarks to offer inferior or different goods or services which could confusion with the original goods or services. The requirements that a logo must fulfill in order to serve as a trademark is that it be distinctive.6 This is the most important condition to acquire commercial source of goods or services and thereby distinguish them from the goods or services of competitors. The logo must not be misleading or violate public order or morality.7 Virtually any sign t is capable of being marked as a logo for distinguishing goods or services of the enterprise.

LOGO UNDER BOTH THE COPYRIGHT AND TRADEMARK REGIMES A comparison of the objectives of copyright protection on the one hand and the objectives of trademark protection on the other hand shows that there are substantially different. Copyright law seeks to provide rewards and incentives for the efforts of authors. Trademark law seeks to safeguard the distinctiveness of logo. The main objective of the copyright protection can be envisaged in promotion of learning. The trademark protection is specific means of ensuring fairness in competition and avoiding consumer confusion. For a logo to get copyright protection it must be an author’s original intellectual creation. A logo as a trademark distinguishes the goods or services of one enterprise from those of others. The area of overlap though remains logo which is an artistic work under copyright law and a sign under the trademark law. Article 2(1) of the Berne Convention gives several examples of artistic works. Illustrations such as drawings and paintings constitute a classical field of artistic work. Pictorial devices, such as logotypes, paintings, figures, drawings and photographs are frequently used as trademarks. Logo

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Article 15(1) of the TRIPS Agreement says that sign must be “capable of distinguishing the goods or services of one undertaking from those of other undertakings.”

Paris Convention for the Protection of Industrial Property provides that “signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin … time of production.” 7 Paris Convention for the Protection of Industrial Property provides that trademark should not be “contrary to morality or public order and, in particular, of such a nature as to deceive the public.”

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often used as trademark is eligible for copyright protection. Copyright protection does not depend on the purpose for which the work is created.

Literature such as the title of a work or a slogan may fall within the scope of both copyright and trademark law.8 The length of a literary production is not a factor for obtaining copyright protection. Short creations such as book titles or advertising slogans may meet the standard of originality and other established requirements. At the same time titles of works and slogans may also enjoy trademark protection.eg the phrase YEH DIL MANGE MORE is a registered trademark of Pepsico Inc. and they have copyright protection on that. A logo may also be in the form of combinations of pictures used for a hologram, a series of animated pictures constituting logo, or a combination of audiovisual elements constituting a multimedia production like a cinematographic work forming a logo. These logos too enjoy copyright protection on the condition that they meet the originality standard and further requirements applied under copyright law.9 Logos of this type may also enjoy trademark protection if they are found to be capable of functioning as trademarks.

SCOPE OF PROTECTION OF LOGO UNDER COPYRIGHT & TRADEMARK As Logo may fall within the scope of both copyright and trademark law case of double protection becomes relevant. Authorizing others to use the protected work is an exclusive economic rights conferred on the owner of copyright in a protected work. It may also be characterized as exploitation rights of the work. Acts of use which cannot be performed without the authorization of the copyright owner are generally defined by the copyright law.10 The exclusive trademark rights place the

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Article 2(1) of the Berne Convention says “books, pamphlets and other writings; lectures, addresses, sermons and other works of the same nature” as examples of literary works. 9 Article 2(1) of the Berne Convention expressly mentions the exemplary enumeration of “Cinematographic works to which are assimilated works expressed by a process analogous to cinematography” as being eligible for protection. 10 Article 9(1) of the Berne Convention says “authorizing the reproduction of literary and artistic works, in any manner or form.”

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commercial use of a trademark under the trademark owner.11

Copyright law seeks to provide

exclusive exploitation rights. The trademark law ensures the distinctiveness of logo. Both under the copyright and trademark law regime it is the owner of the logo who is entitled to exploit the work. In the case of trademark the exclusive right to exploit depends on the commercial activity of the owner of the logo. This is because the prevention of use of logo by a third party depends on the specialty of the owner of logo. The exclusive rights can be asserted only with regard to those in respect of which the trademark is protected. This is ensured by means of registration of the trademark for the specific goods and services. 12 In copyright law the exclusive rights is restricted to use of the work in a specific context. There are certain limitations on the exclusive rights of copyright and trademark. Copyright law only protects the form in which ideas are expressed in a work, but not the ideas themselves. The exclusive rights of copyright owners do not cover the ideas. Trademark rights limited to the use of a logos. Anything outside commercial context does not usually fall under the exclusive rights of trademark owners. Copyright protection does not run indefinitely. Copyright law provides for a period of time during which the work is protected by copyright. This duration of copyright protection usually begins with the creation of the work.13 In U.S.A this protection is provide for the duration of the life of the author plus seventy years after death.14 An author gets the perpetual protection of the moral right.

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Article 16(1) of the TRIPS Agreement says that it is the exclusive right to “prevent all third parties not having the owner’s consent from using in the course of trade identical or similar signs for goods or services which are identical or similar to those in respect of which the trademark is registered where such use would result in a likelihood of confusion.” 12 Article 16(1) of the TRIPS Agreement says that the reproduction of a trademark for purposes which are not traderelated, such as private study or illustrations for teaching, do not fall within the scope of the exclusive right 13 Article 7(1) of the Berne Convention says that the general term of protection shall be the life of the author plus fifty years after his or her death. In India it is sixty years. 14 Eldred v. Ashcroft, 537 U.S. 186 (2003)

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PERPETUAL COPYRIGHT PROTECTION OF - LOGO? There are several reasons as to why copyright protection of logo is not perpetual. Copyright protection is granted to augment the benefits of society as a whole by encouraging creativity. There are precedents of national legislations extending the copyright protection duration, with valid reason. But this need not be extended indefinitely. If there is appropriate and sufficient incentive to create new works extending protection would not be necessary. Even the natural law justification for copyright protection substantiates this. The work progressively becomes an independent factor influencing the cultural and intellectual perception. With increasing communication of work and the simultaneously increasing independence of the work the individual link with the author diminishes and becomes obsolete. This work after the expiry of copyright protection falls in the public domain. The work then becomes free for public. Though certain restrictions follow like the exercise of moral rights which may be perpetual in nature or for a considerably longer period than the duration provided by the copyright protection regime. The work in public domain can be used for further intellectual work as the work in public domain may be reproduced, communicated and disseminated freely. Thus the expiry of copyright protection may have a positive effect on the creation of new works because it enhances the available material. There is no need by the authorization from the author of the work reducing the cost. However when such kind of proposition is seen for logo things does not fit. Logo as a trademark does fit the above scheme of things. The effect of a trademark mark protection being limited by duration would lead to the situation that after the expiration of that period the trademark/logo will fall in the public domain and be reproduced, communicated and disseminated freely. In such a situation the very objective of trademark law and its usefulness will be undermined. Trademark conducts as the indicator of commercial source, quality and reputation of the goods or services. This would lead to the fall of the trademark system. It is very difficult for the recipients of the trademark to keep the tab on which of the trademarks is going to expire. The proper functioning of market economies would be undermined. Transparency and fair competition in the market will be questioned.

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COPYRIGHT PROTECTION OF LOGO

This leads to a situation whereby the trademark is granted for an indefinite period and is renewable if bound by any duration.15 The trademarks’ distinctiveness is preserved. This rule of indefinite renewal permits an endeavor to sustain the exclusive link with its trademarks as long it is used in trade.16

LIMITATIONS UNDER COPYRIGHT & TRADEMARK REGIME If a logo is a copyright protected work then the economic rights recognized in the copyright law, allow copyright owners to regulate its distribution. The availability and reproduction of the logo depends on the owner. Such exclusive economic right is also there in the trademark law regime. The distribution of the trademark protected item is regulated by the owner of the trademark. Though there are certain uses which are exempted both under copyright law and trademark law. These exemptions are granted to balance the interest of society and that of the owner of the exclusive right. Examples of such uses can be for educational institutions, research purpose and general access to information for some specific purpose.17 Apart from these exemptions other places where the copyright protection is relaxed are the public performance of works for religious ceremonies, military bands and the needs of child and adult education and the other application of limitations on the right of reproduction to the translation right in conformity with fair use. There are certain conditions whereby exemption is granted – three to be specific i.e. authorization is not needed.18 These exemptions are permitted when “certain special cases” arise
TRIPS Article 18 says “the registration of a trademark shall be renewable indefinitely.” Article 19 of the TRIPS Agreement says – “if use is required to maintain a registration, the registration may be cancelled only after an uninterrupted period of at least three years of non-use, unless valid reasons based on the existence of obstacles to such use are shown by the trademark owner.” 17 The Berne Convention permits the exemption with regard to lectures, addresses and similar works delivered in public, quotations, press summaries, review and parody, illustrations for teaching, newspaper articles on current topics and the reporting of current events, the exercise of broadcasting and related rights, ephemeral recordings made by broadcasting organizations and the recording of musical works etc in its various provisions. 18 Article 9(2) of the Berne Convention, Article 13 of the TRIPS Agreement and Article 10(1) and (2) of the WIPO Copyright Treaty
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“do not conflict with a normal exploitation of the work” and “do not unreasonably prejudice the legitimate interests of the author.” These include reproduction of a work for private study, judicial or administrative purposes or for use by disabled persons. Trademark law too allows “exceptions to the rights conferred by a trademark, such as fair use of descriptive terms, provided that such exceptions take account of the legitimate interests of the owner of the trademark and of third parties.”19 Apart from exemption for fair use, other examples of exemptions are the use of one’s own name or address, or place of provenance of one’s goods, even if identical to a protected trademark. Hence a trademark logo can be used for all these purpose. The issue of copyright protection of logo comes to play in situations like this. For the purpose of review or parody unauthorized use of a trademark and copyright may also be permitted. This is because otherwise imposing limitation on such activity would be encroachment on the fundamental guarantee of freedom of speech and expression.

COLLECTIVE PROTECTION OF LOGO UNDER COPYRIGHT & TRADEMARK Under copyright law the enjoyment and the exercise of rights relating artistic work is “not subject to any formality.”20 Copyright law does not demand registration for protecting anything worth protecting under the law. Copyright is acquired as soon as some original work is created. The first owner of the copyright is essentially the author of the work if not there is a contract to the contrary in this regard. Whosoever may be the owner of the economic rights protected by copyright of any work, the moral right always belongs to the author. On the other hand a trademark logo can either be protected on the basis of either use or registration. In many countries the registration of a trademark merely confirms the trademark right that has been acquired by use. Whenever dispute arises the first user of the trademark logo gets the priority. Otherwise the exclusive right to the trademark lies with the natural or legal
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Article 17 of the TRIPS Agreement Article 5(2) of the Berne Convention

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person registering a trademark where it is mandatory to register trademarks acquiring protection under the trademark laws. If a logo which enjoys copyright protection has to be used as trademark then it has to be ensured that that the intended use does not come into conflict with the copyright that may be owned by another person. In copyright the moral rights of the author are independent of the economic rights protected by copyright. It belongs to the author even after the transfer of those rights. Hence in the absence of an agreement to the contrary, an enterprise using an artistic work protected under copyright law uses the logo as a trademark maybe obliged to indicate the name of the author. The Berne Convention defines this moral right as the right to “object to any distortion, mutilation or other modification of, or other derogatory action in relation to, the work, which would be prejudicial to honor or reputation.” Any blatant change to the work, logo in this case, which is to be used as trademark, can draw exert an author to exercise this right E.g. changes the colors of a trademark which also enjoys copyright protection, this change may be perceived as a distortion, mutilation or modification of the work.21 Even if the work is not changed but placed in a derogatory then an infringement of the moral right arises. Hence a logo when used as a trademark for activities which may be regarded as objectionable. The issue of potential conflicts with the author’s moral rights is raised if an artistic work as a trademark.

By periodically renewing the registration of the trademark, the trademark owner can enjoy exclusive rights indefinitely by continued use in trade whereas copyright law provides for a limited term of protection. Thus in case of a work enjoying overlapping protection the owner of copyright and trademark rights may be able to maintain trademark protection after the expiry of the term of copyright protection.22 This kind of situation arises despite the fact that the objective of both trademark and copyright are different. Prevention of unfair competition and consumer confusion through the preservation
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Berne Convention Article 6 The maintenance of the trademark registration is subject to uninterrupted use of the trademark. Article 19 of the TRIPS Agreement.
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of a trademark’s distinctiveness is the objective of trademark law. The subject matter of trademark rights is restricted to trade. Thus if a work is entitled dual protection then upon the expiry of copyright protection control over uses that are not trade related, such as private, scientific and educational use become part of public domain. The protection in trademark is subject to the principle of specialty. It is used only in the trade related area of the trademark owner. The copyright protection of a work is provided against any unauthorized commercial use irrespective of the owner’s business activities which is not authorized by the owner or permitted by law.

CONCLUSIONS The following conclusions summarize a number of issues relating to the logo as a trademark and as an artistic works. The comparative analysis of the basis of trademark and copyright protection shows that the two protection regimes differ substantially. Logo provides the link between the two branches of intellectual property law. The coverage of logo under copyright is a classic case of dual protection. Hence it should be seen whether the temporary protection conferred by logo is adequate. Whether the logo or the work falls into public domain completely or the protection accorded by trademark law would reconcile with the objective of the intellectual property. The hazard of consumer confusion and unfair free-riding on the trademark’s reputation as an offshoot of simultaneous expiration of copyright and trademark protection and effect on the trademark system as a whole would have to be considered in the case of dual protection. The reason being that if a copyright protected logo falls into public domain it can be used freely by public for commercial purpose coming in direct conflict with the trademark nature. This would lead to a situation whereby tunes from famous music piece can be used for advertisement and reproductions of famous paintings used as logo in labeling products. Though moral rights would continue even after the expiration of economic rights recognized by the copyright law regime. The curious situation would arise when the logo whose copyright protection is over is used for the commercial purpose by the general public. Use in trade would attract the issue of 9|Page Submitted By – RAWISEN GURIA (ID- 207062)

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granting trademark rights in such works. Acquisition of trademark rights in logo in the public domain will give rise to a situation whereby the trademark holder may debar others to refrain from using it in respect of which it can assert trademark protection. This would lead to appropriation of logo from the public domain. Logo as an artistic work and a trademark is protected for being carrier of information by both copyright and trademark law. Many a times a strong brand becomes the product itself. The relation between logo as a trademarks and artistic works may be understood as the relation between different means of communication. This broader perspective widens the view on complementary principles clarifying the relationship between the two fields of intellectual property law. The overlap of logo as a trademark and copyright protection as regards certain subject matter raises the need to ensure coherence between the two branches of intellectual property law by defining complementary policy objectives and guidelines.

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BIBLIOGRAPHY Commercial Exploitation of Intellectual Property Rights, Hillary Pearson and Clifford Miller, Blackstone Press, Sussex, 1990 Copinger and Skone James on Copyright. K. Garnett, Sweet and Maxwell, London, 1999 Intellectual Property Patents, Copyright, Trademarks and Allied Rights, W.Cornish , Thompson Sweet and Maxwell, 2006 Intellectual Property Law, Lionel Bentley and Brad Sherman, Oxford University Press, London, 2001 Law Relating to Intellectual Property Rights, Lexis Nexis Butterworth’s, New Delhi, 2007 Law Relating to Patents, Trademarks, Copying, Designs and Geographical Indications, B.L. Wadhwa, Universal Law Publishing 3rd Ed., New Delhi, 2009 Principles of Intellectual Property Rights, Catherine Colstone, Cavendish Publishing, Great Britain, 1999

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